RUSSIA SUSPENDING IP RIGHTS
As a consequence of the economic sanctions imposed by some countries to Russia in response to the invasion of Ukraine, on March the 6th the Russian government issued Decree No. 299, authorising the lifting of intellectual property rights. This mechanism allows the expropriation of IP rights, similar to a compulsory licence.
This is possible as the Russian Civil Code foresees, for situations of extreme necessity associated with supporting the defence and security of the state, that the government can lift third parties’ Intellectual Property rights without the right holder’s consent, allegedly for “proportional” compensation. However, the Decree implies that the amount of the compensation would be of 0%, for companies or natural persons which are registered, are nationals or have their business in a so-called “hostile country”.
In this way, Russian companies or even natural persons, will be able to use inventions which until last week were protected in Russia under patents, utility models or designs.
Namely, if an invention was patented in Russia but is owned by a foreign owner which falls into the above-mentioned list, this invention is susceptible of being used in the Russian territory, without requesting any authorisation, nor compulsory licence, nor paying any compensation. This also entails, in the above-mentioned cases, the impossibility to sue infringers before Russian Courts and consequently, this prevents right holders from claiming damages.
At this moment, the Decree does not mention trade marks, but it is likely that due to big companies’ withdrawal from the country, the government could authorise local manufacturers to take over the production and the use of the trade mark, in order to face the shortage of goods. Moreover, as we will see in the next article, nothing prevents national Courts from applying the provisions of the Decree by analogy.
Back to Russia, a Court dismissed a trade mark infringement action and authorised the free use of the trade mark character of Peppa Pig, the popular cartoon series.
Peppa Pig’s trade mark owner, the film producer Entertainment One UK Ltd, sued a Russian entrepreneur for trade mark infringement, as he created his own version of the trade mark.
Entertainment One UK Ltd based its claims on two international trade mark registrations, one for the word mark “Peppa Pig” and another for the drawing of the character itself.
The producer requested a compensation of about 400 pounds, but the action was dismissed by the Court.
The motivation given relied on the grounds explained in the previous article, namely the sanctions imposed to Russia and the fact that the company is UK-based, hence one of the considered unfriendly countries.
The Court concluded that the trade mark infringement claim should be dismissed, since the request constituted an abuse of rights, pursuant to article 10 of the Russian Civil Code.
Even if nothing was mentioned in the recently published Decree about trade marks, it seems that in this case the judge applied the provisions by analogy. It now remains to be seen whether this judgment will open the door for Russian Courts to dismiss further infringement cases of foreign trade marks, on the basis of the sanctions imposed to the country.
- Publication date
- 17 March 2022
- European Innovation Council and SMEs Executive Agency